2025 Week 3
The UPC has most definitely kicked into gear. Each week there are increasing numbers of decisions, orders and news items to review. Over the end of year period, there have been many settlements reached, including in some high-profile cases. This week we report on two interesting but separate developments – one which is a bit left field about the jurisdiction of the UPC and the other is a decision on added matter that is absolutely straight down the line.
Come to the UPC just for a damages assessment?
On 16 January 2025, the UPC Court of Appeal (CoA) issued their decision on a preliminary objection in the case Fives v REEL. The CoA decided that where a national court has already decided that there is infringement of a European patent, then the UPC has jurisdiction over a separate damages assessment.
On the face of it, this is a surprising development, and overturns the decision reached at first instance. So let’s take a look.
The Fives patent is EP 1740740 B1, which will expire in March 2025. Well before the UPC opened for business, Fives were successful in infringement proceedings against REEL in a German court. REEL filed an action for revocation of the patent in Germany – this case is under appeal in Germany, having been dismissed at first instance.
Rather than asking the German court to determine damages, Fives instead launched an action at the UPC for this remedy. This is something that hasn't been tried before. REEL filed a preliminary objection, arguing that the UPC does not have jurisdiction for a standalone action for damages.
In November 2023, the UPC Local Division Hamburg agreed with REEL that the UPC did not have jurisdiction in these circumstances. The Local Division considered that, for the UPC to carry out a determination of damages, this must follow a decision by the UPC on the merits of infringement. Fives appealed. In the appeal, there were various arguments flying around about interpretation of the UPC Agreement, the scope and effect of the very detailed Rules of Procedure, and the effects of European Union law, which has primacy over the UPC Agreement.
The CoA disagreed with the Local Division. They decided that the UPC Agreement does not rule out a separate action for damages at the UPC. The CoA took the view that the jurisdiction of the UPC should be read broadly, meaning that a separate action for damages following a national court decision on the merits of infringement should be possible. The case is being remitted back to the Local Division to carry out a damages assessment.
Already there has been some interesting discussion of this decision. However, it seems to us that its effect is quite narrow. In this case, the only damages being requested are in respect of infringements taking place in Germany. At the UPC, it will not be possible for REEL to argue either that there was no infringement or that the patent is invalid, because these issues have been decided in Germany or are still being decided there. The UPC cannot consider these points.
Problems arise when you try to extrapolate this case, which is why we think that its effect must be narrow. If, for the sake of argument, Fives were to try to expand the scope of the damages assessment to cover other UPC countries (e.g. infringement in France), then the question of infringement and validity of the French part of the European patent would be fair game at the UPC. Therefore, REEL should be able to counter such damages proceedings by bringing an action for revocation of the patent, and/or proceedings for a declaration of non-infringement, for UPC countries other than Germany. We assume that this would lead to a stay of the damages assessment proceedings, at least for damages outside Germany.
Less controversially, the CoA also decided that the UPC has jurisdiction to decide on acts of infringement that took place before 1 June 2023 (the date the UPC opened for business). The one proviso is that the European patent must have been in force on that date. This affirms a decision from a UPC Local Division in Edwards v Meril that we reviewed here.
It is clear overall that the UPC Court of Appeal intends that the jurisdiction of the UPC should be as wide as possible, further increasing the attractiveness of the UPC for patent proprietors.
UPC approach to added matter – another Juul patent vaporised
On 17 January 2025, the UPC Central Division Paris issued yet another decision between NJOY v Juul, this time on a central revocation action against Juul’s EP 3430921 B1.
The Central Division revoked the patent for added matter. We have taken a look at the decision because as it happens there are parallel opposition proceedings against the same patent at the EPO.
When considering the added matter objection, the approach of the Central Division was to say that NJOY had made out a prima facie case that there is not literal basis for the wording of claim 1 in the original application. Therefore, the burden of proof shifted to the patentee to show that the claim is valid.
The court went through all the defendant’s arguments in support of basis for the granted claims and dismissed each one. Other than a more detailed consideration of the interpretation of the claims, the UPC approach overall seemed very similar to how the EPO would approach the same question. The UPC decision refers back to Abbott v Sibio, which was a Local Division decision on a preliminary injunction (our report here). The Central Division in this case formulated the test for added matter like this:
An amendment is regarded as introducing subject-matter which extends beyond the content of the application as filed, and therefore unallowable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art. Any amendment can only be made within the limits of what a skilled person would directly and unambiguously derive, using common general knowledge, and seen objectively and relative to the date of filing (or the priority date, where appropriate), from the whole of the documents as filed.
Having said that this is EPO-like, we have an actual comparison to make. The EPO opposition division revoked the same patent in July 2024. The opposition division decision makes it clear that it is exactly the same features of claim 1 that caused the added matter problem.
At the UPC and at the EPO, Juul were unable to amend the patent to cure the problem. At the EPO, Juul filed 110 (yes, 110) auxiliary requests and the opposition division doggedly stepped through them all.
The UPC were not feeling quite so expansive as the EPO in permitting auxiliary requests. Juul filed 57 auxiliary requests with their application to amend the patent at the UPC, but the Central Division told them to limit this number. Juul came back with 12 auxiliary requests. They tried to file more later, but these were not admitted. The court commented that 12 is at the upper limit of what could be considered reasonable in the circumstances of the case.
